The applicant, Retro Bag Shop, applied for registration of a figurative mark with the text NORTHERN SOUL KEEP THE FAITH for goods in Class 18, namely imitations of leather, travelling bags, handbags, rucksacks, purses, wallets, flight and shoulder bags.
Registration of the mark was opposed relying on the absolute grounds of refusal set out in section 3(1)(d) of the Trade Marks Act 1994, on the grounds that the trade mark consisted exclusively of “signs or indications which have become customary in the current language or in the bona fide and established practices of the trade”. The opponent maintained that the term “Northern Soul” was descriptive of a musical genre which had been in use for around 40 years. Similarly, the clenched fist symbol, which emanated from the Black Power movement, had been prevalent for about 40 years. On that basis the opponent argued that the logo should be free for use by all traders and not be monopolised by the applicant.
In his evidence, the opponent maintained that the logo had first come to prominence in the 1970s when it was used on posters to advertise Northern Soul events, and that it was worn by attendees as a badge of allegiance. Since then the logo had come to be used on a variety of goods, notably badges, t-shirts and bags. The evidence of other witnesses was also to the effect that the logo, and the expression “Keep the faith” were used by those involved in Northern Soul and were not the creation of a bag manufacturer – it was a badge of allegiance to the Northern Soul movement.
The hearing officer concluded that there were a number of businesses selling bags bearing the logo before the applicant’s filing date and that those traders must have viewed the mark solely as a generic badge of allegiance to the Northern Soul movement. The sign, in the opinion of the hearing officer, was part of the common “language” of Northern Soul fans.
The case is interesting for showing the relevance and importance of the views of ordinary consumers, as distinct from people within the trade, and as an illustration of how a word that has achieved generic use in the trade, will not be capable of registration as a trade mark.